Kilopass Technology, Inc. v. Sidense Corporation

Filing 168

ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO AMEND ITS INVALIDITY CONTENTIONS (SI, COURT STAFF) (Filed on 11/2/2011)

1
2
3
4
5

IN THE UNITED STATES DISTRICT COURT

6

FOR THE NORTHERN DISTRICT OF CALIFORNIA

7
8

KILOPASS TECHNOLOGY INC.,

9
United States District Court
For the Northern District of California

10
11
12

No. C 10-02066 SI

Plaintiff,

ORDER DENYING DEFENDANT’S
MOTION FOR LEAVE TO AMEND ITS
INVALIDITY CONTENTIONS

v.
SIDENSE CORPORATION,
Defendant.

/

13
14

Defendant moved for leave to amend its invalidity contentions. The motion is scheduled for

15

hearing on November 4, 2011, at 9:00 a.m. Pursuant to Civil Local Rule 7-1(b), the Court finds the

16

matter appropriate for disposition without oral argument and therefore VACATES the hearing. For the

17

reasons below, the Court hereby DENIES defendant’s motion to amend its invalidity contentions.

18
19

BACKGROUND

20

Plaintiff Kilopass Technology, Inc. (“Kilopass”), filed this action for patent infringement under

21

Patent Laws of the United States, 35 U.S.C. § 100, et seq., against defendant Sidense Corporation

22

(“Sidense”). The three patents at issue involve “a novel way of storing data permanently inside

23

integrated circuits by creating a breakdown in the transistor, safely and reliably, now referred to as

24

embedded Non-Volatile Memory.” Second Amend. Compl. (“SAC”) ¶ 8. Sidense served its first set

25

of discovery requests and its invalidity contentions on Kilopass in February 2011. After receiving

26

Kilopass’s document production in September 2011, Sidense now seeks to amend its invalidity

27

contentions to assert that Kilopass’s claims are invalid for failure to meet the enablement requirement

28

of 35 U.S.C. § 112. Def.’s Mot. to Amend at 1. Sidense argues that Kilopass’s production of nonpublic

1

documents includes an email that evidences that Kilopass tried and failed to enable in a commercial

2

product the one-transistor (“1-T”) bitcell. Id.

3
4

LEGAL STANDARD
The Patent Local Rules provide, in relevant part: “Amendment or modification of the . . .

6

Preliminary or Final Invalidity Contentions . . . may be made only by order of the Court, which shall

7

be entered only upon a showing of good cause.” Patent L.R. 3-6. “The local patent rules in the

8

Northern District of California . . . requir[e] both the plaintiff and the defendant in patent cases to

9

provide early notice of their infringement and invalidity contentions, and to proceed with diligence in

10
United States District Court
For the Northern District of California

5

amending those contentions when new information comes to light in the course of discovery. The rules

11

thus seek to balance the right to develop new information in discovery with the need for certainty as to

12

the legal theories.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed.

13

Cir. 2006). In determining whether a motion for leave to amend invalidity contentions should be

14

granted, this Court has examined such factors as the relevance of the newly-discovered prior art,

15

whether the request to amend is motivated by gamesmanship, the difficulty of locating the prior art, and

16

whether the opposing party will be prejudiced by the amendment. See Yodlee, Inc. v. CashEdge, Inc.,

17

2007 WL 1454259, *2-3 (N.D. Cal. May 17, 2007).

18

In contrast to the more liberal policy for amending pleadings, “the philosophy behind amending

19

claim charts is decidedly conservative, and designed to prevent the ‘shifting sands’ approach to claim

20

construction.” LG Elecs. Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (citation

21

omitted). The patent local rules were “designed to require parties to crystallize their theories of the case

22

early in the litigation and to adhere to those theories once they have been disclosed.” O2 Micro, 467

23

F.3d at 1366 n.12 (quoting Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d

24

1121, 1123 (N.D. Cal. 2006)).

25

Enablement is a question of law, and is required of every patent pursuant to 35 U.S.C. § 112 ¶ 1.

26

Liquid Dynamics, Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224 (Fed. Cir. 2006). To satisfy the

27

enablement requirement, “a patent must teach those skilled in the art how to make and use the full scope

28

of the claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk A/S, 108
2

1

F.3d 1361, 1365 (Fed.Cir.1997). Several factors are considered in deciding the issue of undue

2

experimentation: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance

3

presented; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state

4

of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the

5

art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed.Cir.1988).

6
7
8
9
United States District Court
For the Northern District of California

10

DISCUSSION
Sidense contends that a Kilopass email to its customer, Samsung, reveals Kilopass’s failed
attempt to commercialize its claimed 1-T technology. The contents of the email are as follows:

14

We have discussed in our meeting with your team that Kilopass owns US
patents in the 1-T split-gate approach. We even have evaluated this 1-T
technology in silicon many years ago. We have concluded that the 1-T
split-gate technology has some very fundamental problems in reliability
for high-volume production. This fundamental reliability problem cannot
be overcome easily. This 1-T approach is not a technology that can
support any reliable high-volume multiple-lot silicon production, even if
the technology can be demonstrated to be working in a very low quantity
proto-type test chip.

15

Cook Decl., Ex. 1. Sidense contends that this email is evidence that Kilopass failed to enable its

16

invention in a commercial product, and that such failure is “strong evidence” that the patent

17

specification lacks enablement. Def.’s Mot. to Amend at 2. Sidense cites to Ormco Corporation v.

18

Align Technology, Inc. for the proposition that an attempt and failure at commercial production is

19

evidence of non-enablement. 498 F.3d 1307, 1319 (Fed. Cir. 2007). Therefore, Sidense argues, the

20

evidence provided in the email satisfies provides the good cause necessary to amend its invalidity

21

contentions. Def.’s Mot. to Amend at 3 (citing Patent Local Rule3-6).

11
12
13

22

Kilopass contends that the enablement requirement is not based on commercial feasibility of the

23

invention but instead on whether “one skilled in the art, after reading the specification, could practice

24

the claimed invention without undue experimentation.” Pl.’s Opp. at 3 (citing AK Steel Corp. v. Sollac

25

& Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003)). Kilopass points out that the email clearly states that

26

the technology could work in low quantity production. They argue that a patent holder need not

27

demonstrate the feasibility of high quantity commercial product to prove enablement. Pl.’s Opp. at 3.

28

The Court agrees with Kilopass. High volume production is not necessary to satisfy the
3

1

enablement requirement. The case that Sidense relies on, Ormco, is inapposite here. The patents in

2

Ormco were processes related to the computer-aided design and manufacture of custom orthodontic

3

appliances. Id. at 1311. One of the claims was a computerized system that automatically determined

4

tooth positions without human decision making. Id. at 1318. The Court found that there was no

5

evidence that anyone, including the defendant, could implement the system based on the patent

6

specification because variations in human anatomy prevented fully automatic determinations. Id. In

7

other words, the invention claiming automatic determinations of tooth positions without human decision

8

making required human decision making. Therefore, the court held that the patents were not enabled.

9

Id. at 1319.

United States District Court
For the Northern District of California

10

In contrast to the claims in Ormco, Sidense does not contend that there is evidence that Kilopass

11

attempted but failed to produce its claimed technology. Rather, Sidense contends that the email reveals

12

a failure to produce the technology in a commercial product, and therefore the email evidences non-

13

enablement. However, Ormco does not stand for the proposition that commercial viability or high

14

volume production is a prerequisite for enablement. It simply (and logically) holds that a complete

15

failure to produce an invention as specified is evidence that the patent specification lacks enablement.

16

The Kilopass email only reveals that the invention is difficult to produce at high volumes, not that it

17

failed to produce the invention altogether. The ability to produce at high volume is not required for

18

enablement. Instead, the enablement requirement is sufficiently satisfied with “any mode of making and

19

using the claimed invention.” Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir.

20

1991); see Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d

21

1296, 1306-07 (“it is not required to enable the most optimized configuration, unless this is an explicit

22

part of the claims”); CFMT Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003)

23

(“enablement does not require an inventor to meet lofty standards for success in the commercial

24

marketplace”).

25
26

Therefore, the cited email provides no evidence of non-enablement of the 1-T technology.
Sidense has not met the good cause threshold to amend its invalidity contentions.

27
28
4

1
2
3

CONCLUSION
For the foregoing reasons and for good cause shown, the Court hereby DENIES Sidense’s
motion for leave to amend its invalidity contentions.

4
5

IT IS SO ORDERED.

6
7

Dated: November 2, 2011
SUSAN ILLSTON
United States District Judge

8
9
United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
5